The United States Patent Office consistently relies on ’common sense’ to issue rejections and invalidate patents. They obviously do this because it is easier than actually finding evidence to support their positions. And, few take their commonly poorly drafted opinions to the Federal Circuit for review.

The PTO’s legal justification for this sloppy legal analysis is the Supreme Court’s decision in KSR, where the Court stated that common sense can be used to determine whether it would be obvious to COMBINE references to reach the claimed invention.

However, this KSR decision doesn’t speak to the use of common sense to SUPPLY missing details NOT PRESENT in any prior art reference. When there are missing elements in the prior art as compared to the claimed invention, the USPTO cannot use KSR to supply that missing element based on common sense. Instead, the USPTO must find everything in the claims in some piece of documentary evidence. They are then given authority - and believe me they use it - to say the combination would be common sense without any evidentiary support.

The Court here took another opportunity to warn the USPTO against this type of short-cut no-evidence because-I-say-so legal analysis. The PTO was first warned in Hear-Wear and now here in Arendi. We’ll see if the USPTO changes its ways to actually follow the law or whether it continues to act as if the law doesn’t apply to it.